Covered Business Method (CBM) Patent Review: Another Way to Kill Software Patents? (Live MBHB Webinar)

Tues., Nov. 15, 2016 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx

In 1998, the United States Court of Appeals for the Federal Circuit decided State Street Bank & Trust Co. v. Signature Financial Group, Inc., which upheld the patentability of business methods in the United States. Since then, an increasing number of business method patent applications have been filed at the United States Patent Office, particularly given the importance of the Internet to commerce today.

Thirteen years and thousands of issued business method patents later, Congress enacted the transitional program for post-grant review of covered business method (CBM) patents by the Patent Trial and Appeal Board (PTAB) in the America Invents Act (AIA) of 2011. CBM reviews took effect in September 2012 as a quick and cost-effective way to adjudicate validity of a so-called business method patent. However, since enactment of the CBM procedure, there has been non-uniformity in PTAB rulings as to whether the challenged patent qualifies as a covered business method, i.e., whether the patent claims a method, or corresponding apparatus, that is used in the practice, administration, or management of a financial product or service. Many PTAB rulings have instituted a CBM trial for a Software patent having claims seemingly unrelated to a financial product or service whatsoever. This presentation will provide a review of CBMs and PTAB decisions focusing on both early and more recent trends by the PTAB. Topics will include:

  • What are CBMs?

  • Non-uniformity in PTAB rulings

  • Differing Views on the Subject Matter Considered: Specification, Claims, or Both?

  • How CBMs are used against Software patents


Presenter(s): MBHB partner Joseph Herndon


Access an archived audio version of this webinar here.

NOTE: MCLE credit is not available for this archived recording.

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.